Ms. Yuan joined Liu, Shen &
Associates in 2008 as a trademark attorney and got her qualification as an
attorney at law in 2009. Her practice encompasses trademark prosecution,
invalidation, litigation, and corporate Trademark counseling. Her
expertise is in trademark clearance and filing strategies, trademark strategies,
filing trademarks throughMadridsystem.
Ms. Yuan holds a Bachelor of
English Literature fromWuhanUniversityand a Master of Intellectual Property fromFranklinPierceLawCenter(nowLawSchoolof theUniversityofNew Hampshire).
She received training from Birch, Stewart, Kolasch & Birch, LLP in
2008.
Representative cases that Ms.
Yuan has led or participated include
- LEGO JURIS A/S (Denmark) v. TRAB, a trademark
litigation case, representing LEGO arguing LEGO’s minifigures are inherently
registrable as a trademark.
- NXP B.V. (Netherlands)
v. Goodark Company (Taiwan),
representing NXP winning oppositions based on copyright right against trademark
right;
- QUIKSILVER INTERNATIONAL PTY LTD (Australia) v.
Jinjiang Xinnuo Tradding Co., Ltd. (China), representing Quiksilver winning
trademark opposition based on prior trademark and prior copyright;
- NEXT RETAIL LIMITED (UK) v. Guangzhou Baosheng
Development Co., Ltd. (mainland China), a trademark litigation case, representing
NEXT to convince the court to break sub-class system;
- Tripod Company (Taiwan) v. Beijing Golden Star
Company (mainland China), representing TRIPOD in trademark litigation case,
convincing the court to recognize Tripod’s prior use and reputation and cancel
part of Golden Star’s goods;
- OBI PHARMA Inc.(Taiwan) v. TRAB, representing
OBI PHARMA to negotiate with the owner of cited mark, who has agreed to cancel
their conflicting goods, and convincing the court to rule to approve the registration
of OBI PHARMA’s house mark in Chinese after the cancellation became effective;
- Megvii Co., Ltd.(mainland China) v. TRAB,
representing Megvii to negotiate with the owner of cited mark, who has agreed
to provide letter of consent and assign the cited mark to Megvii, and
convincing the court to accordingly approve the registration of an important
mark of Megvii in the second instance.
Publication
- Issues in trade mark licensing, TRADEMARK TIMES, 2017 INTA;
- Lack of divisional application and partial
assignment, Management of Inetellectual Property 2017;
- Examining non-trademark rights protected by Chinese
Trademark Law, Management of Intellectual Property 2018.
Typical Counseling Cases
- Trademark
counseling for three European companies and one US company for 6 years.
- Trademark
counseling for two Chinese IT companies for 3 years.